The Committee on the Judiciary, to whom was referred
the bill (H.R. 5372) to amend the Trademark Act of 1946 to make certain
revisions relating to the registration of trademarks, and for other purposes,
having considered the same, report favorably thereon without amendment and
recommend that the bill do pass.

I. PURPOSE OF THE LEGISLATION

The
Lanham Act, the Federal trademark law, was adopted in 1946. Although it has
been amended in various ways over the years, it never has been completely
updated to bring the law into accord with the current realities of the
marketplace.

H.R.
5372 takes a major step in that direction by 1) permitting trademark
registration applications to be based on the applicant's bona ﬁde intention
to use the mark in commerce; (2) explicitly granting consumers standing to sue
for violations of Section 43(a) of the Act, which has become a Federal remedy
for false and misleading advertising and other unfair competitive acts; and (3)
reducing ''deadwood'' by changing the registration period from 20 to 10
years.n1

II. STATEMENT OF LEGISLATIVE ACTIONS

On March 15,
1988, Representative Carlos Moorhead of California,
the ranking minority member of the Subcommittee on Courts, Civil Liberties and
the Administration of Justice of the House Com—

[2]

mittee on the Judiciary, introduced H.R. 4156, the
Trademark Law Revision Act. H.R. 4156 represented a comprehensive revision of
the Lanham Act, and was part of Representative Moorhead's longstanding
commitment to a strong and vigorous body of intellectual property laws.

Both bills were based on recommendations of the United
States Trademark Association, which, through its Trademark Review Commission,
reviewed the status of the current law, and concluded that Congress should
revise and update that law.

The Senate amended S. 1883 as introduced in several
ways and passed it on May 13, 1988.n2

On September 8,
1988, the Subcommittee on Courts, Civil
Liberties and the Administration of Justice held one day of hearings on H.R.
4156. It heard testimony from Senator DeConcini; the President of the United
States Trademark Association, Ronald Kareken; Yale Law School Professor Ralph
Brown; Bruce Silverglade, the Director of Legal Affairs for the Center for
Science in the Public Interest; Roberta Jacobs----Meadway, a private trademark
practitioner; and Debra Goldstein, the Senior Vice President and Associate
General Counsel for Ogilvy & Mather Advertising.

Senator DeConcini and Mr. Kareken spoke in favor of
the bill as a whole, and, in general, both recommended that certain amendments
adopted by the Senate should also be adopted by the House. Professor Brown, Mr.
Silverglade, Ms. Jacobs--Meadway, and Ms. Goldstein testiﬁed to their
concerns about certain parts of the proposal, either as introduced or as passed
by the Senate. In addition, Mr. Silverglade advocated an addition to the
legislation to speciﬁcally grant consumers standing to sue for
violations of Section 43(a) of the Lanham Act.

On September 22, 1988, with a quorum being present,
the Subcommittee on Courts, Civil Liberties and the

Administration
of Justice adopted an amendment in the nature of a substitute to H.R. 4156
offered by the Chairman of the Subcommittee, Robert W. Kastenmeier of Wisconsin. The
amendment was adopted by a vote of 9 to 6. Another amendment in the nature of a
substitute, encompassing the bill as passed by the Senate, was offered by
Representative Moorhead, but was rejected, also by a vote of 9 to 6. The
Subcommittee then reported the bill by voice vote, no objections being heard.
Representative Kastenmeier introduced a clean bill, H.R. 5372, on September 23,
1988.

On September 27, the Committee on the Judiciary, with
a quorum being present, considered two amendments offered by Representative
Moorhead. The ﬁrst was the same amendment in the nature of a substitute
considered by the Subcommittee. It was defeated by a vote of 21 to 13. The
second sought to delete the consumer standing provision. It too was defeated by
a vote of 21 to 13. The Committee then favorably reported H.R. 5372 by voice
vote, no objections being heard.

[3]

III. BACKGROUND

As noted, the United States Trademark Association
(USTA) proposed to the Congress a comprehensive revision of the Lanham Act. The
proposal in turn was based on the review, debate, and recommendations of the USTA's
Trademark Review Commission. n3

The Lanham Act is widely considered to be inconsistent
with current market practices in a number of respects. The USTA proposal was,
at least in part, an attempt to conform the law to those practices, and to
avoid the ad hoc nature of prior amendments to the Lanham Act.n4

Most comprehensive revisions of the law generate some
controversy, and this legislation is no exception. In fact, the trademark laws
are usually particularly difﬁcult to amend because of the sensitive
interplay between those laws and the values protected by the First Amendment.
Representative Bruce Morrison noted the dangers of monopolizing marks when he
stated during Subcommittee consideration of H.R. 4156:

[W]e are
dealing ... with ... the granting of ownership rights to particular words ...
in order to protect the

ability
of commercial enterprises to communicate clearly to customers [that they are
purchasing] something

of dependable quality, but we ought not to overstep
the bounds.

As noted below, the Senate did not adopt some of the
USTA recommendations. The Committee agrees with the Senate's decision and, in
addition, has determined that still other recommendations must await
consideration at a later time. By not adopting all of the USTA recommendations,
the Committee does not by any means repudiate its enormous and valuable effort.
Rather, it is a tribute to USTA that it achieved a wide consensus about the
most central element of its proposed reform, a revision of the registration
process to permit applications based on a person's intention to use a mark in
commerce.

APPLICATIONS BASED ON ''INTENT TO USE''

USTA's so--called ''intent to use'' recommendation won
wide support. In fact, various ''intent to use'' proposals have been introduced
in Congress, although without success, since 1938. The last two such proposals
in the House of Representatives were introduced by Representative Kastenmeier
in 1969 and 1971. n5

The current system requires a person to make actual
use of a mark before applying for registration. The amendment gives the
applicant a choice: he or she may rely either on actual use of the mark in
commerce or on an intention to use the mark. The objective behind the amendment
was well stated by the President of the USTA, Ronald Kareken:

[4]

[The] pre--application use requirement (i) unfairly
discriminates against U.S. citizens, as compared to foreign citizens, (ii)
imposes signiﬁcant legal risks on the introduction of new products and
services; (iii) gives rise to the practice of ''token use,'' (iv) gives
preference to certain industries, frequently disadvantaging small companies and
individuals, and (v) burdens the trademark register with marks which are not
actually used in normal commercial transactions.n6

The
''intent to use'' recommendation, at least in concept, has not been
controversial. However, USTA's suggested implementation did prove
controversial, to the extent that an ''intent to use'' applicant was permitted
to sue before he or she made use of the mark and the mark was granted
registration. The Senate's response to this controversy was to pass an
amendment that would have permitted the lawsuit to be pursued up to the point
of ﬁnal judgment, but would have precluded the applicant from obtaining
the a ﬁnal judgment before use and registration occurred. The
Subcommittee on Courts, Civil Liberties and the Administration of Justice responded
by deleting the entire provision, thus retaining current law, permitting only
registrants (and others who have used trademarks) to sue. See, e.g., 15
U.S.C. 1114, 1116, and 1125(a). The Subcommittee chose this course of
action because of the serious concerns expressed by persons with signiﬁcant
experience with the Federal court system. The ﬁrst concern was practical
in nature, in that the ﬁling system of the Federal courts is incapable
of routinely retaining in its ﬁles lawsuits that remain unresolved for
up to four years. The second concern stems from the fact that the
constitutional basis for the Federal trademark laws is use of the mark in
commerce. Permitting a plaintiff to sue before use occurs thus raises serious
questions about abuse of the judicial system, about whether Federal
jurisdiction and a case or controversey exists, and about whether such a case
is ''ripe.''

The Committee recognizes that if ''intent to use''
applicants cannot sue to enforce their rights, those rights may, at least in some
situations, be rendered meaningless. On the other hand, it is unwilling to
endorse a system that raises the serious questions propounded by the experts on
Federal courts matters. Since the effective date of the Trademark Law Revision
Act is one year from the date of enactment, the Committee hopes to ﬁnd a
resolution of this issue by then.

The Subcommittee on Courts, Civil Liberties and the
Administration of Justice reduced the proposed ''intent to use'' application
term, during which an allowed application might be kept pending, from a total
of four years to two years. It also changed the extension process, which is
virtually automatic under the Senate bill, to one requiring a showing of
exceptional circumstances. See discussion of Section 1 of the Lanham Act,
infra. The Committee endorses these changes as well.

[5]

AMENDMENTS TO SECTION 43 OF THE LANHAM ACT

A second set of recommendations by USTA proved highly
controversial. These recommendations related primarily to proposed revisions of
Section 43 of the Lanham Act, and would have prohibited omissions of material
information disparagement and tarnishment of a mark, and dilution of a famous
and distinctive mark. In addition, the remedies for violating these
prohibitions would have been enhanced, through a proposal to explicitly apply
Lanham Act remedies for registered marks to unregistered marks protected by
Section 43. Serious questions were raised about these provisions by persons
concerned with the dissemination of First Amendment protected communications,
and with advertising their goods and services to the public.n7 Included among
them are the Federal Trade Commission, broadcasters, publishers of newspapers,
books, and magazines, the American Civil Liberties Union, advertisers,
insurance companies, and practitioners.

The Senate deleted the proposals relating to material
omissions and tarnishment and disparagement, but the dilution and enhanced
remedies provisions remain in the Senate bill. The Moorhead
amendment in the nature of a substitute, offered at Subcommittee and Committee,
adopted the Senate bill. Based on the hearing record, the Subcommittee on
Courts, Civil Liberties and the Administration of Justice deleted all of these
proposals from the bill. The Committee endorses this action. The record is
clear that these concerns warrant further consideration. For example, the
Society of Professional Journalists noted that:

[N]ews reportage, comedy and satire, and editorial commentary may be
threatened by [the dilution provision].

The
remedy of injunctive relief to enforce this provision also raises the specter
of an unconstitutional prior

restraint. n8

The National Public Radio voiced similar concerns:

Such antidilution
statutes have been used to bring cases against persons doing satire. In addition,
NPR

undertakes
extensive and award--winning consumer reporting on products which may affect
the health and

safety of
the American public. Those programming pieces could be subject to unfair attack
by those who

disfavor
them under the pro—

[6]

posed antidilution
provisions of the bill ...NPR urges the Subcommittee to

remove this provision from the bill in light of its
potential for misuse against legitimate news, information,

and entertainment programming.n9

The
National Association of Broadcasters, noting the ''more stringent penalties if
willful intent to trade on a registrant's reputation or cause dilution of a
registrant's mark is shown,'' wrote that the dilution section raised concerns
similar to those raised about the material omissions and tarnishment and
disparagement provisions. The NAB concluded that, ''In the rough and tumble of
the marketplace of ideas, we are of the view that the instinct for protection
of image generally must give way to greater First Amendment values.''n10

According to the National Newspaper Association, the
Senate bill and the Moorhead amendment expand

the scope
of the Act's statutory remedies, including treble damages and attorney fees,
beyond cases dealing with registered trademarks to cases dealing with all violations
protected under the act, including [dilution. This section], in conjunction
with [the dilution provision], constitutes an open invitation for new and
substantial litigation against all media, including even the smallest
newspaper.n11

The Committee notes that the concept of ''fair use''
in trademark law is narrow,n12 and does not save these provisions from
constitutional challenge.n13 In addition, it recognizes that a dilution statute
by its very nature does not present issues of consumer confusion because the
mark at issue is generally used on different goods or services than those for
which the mark is registered. The lack of consumer confusion is irrelevant to
the constitutional concerns presented here, because, as in satire and parody,
the mark is usually deliberately not used on the same goods or services.
Finally, the Committee notes that various commentators have expressed serious
constitutional reservations about the existing 23 State anti--dilution
statutes.n14

The Committee endorses the deletion of all of the
proposed amendments to Section 43(a), in favor of comprehensive and careful
hearings on these important issues. It does not believe that these proposed
amendments should be considered individually. Rather, they must be considered
together and in context, so that their interaction with each other, and with
First Amendment rights,

[7]

may be
fully examined. The Committee hopes that, in the next Congress, the many
competing voices on these issues will be reconciled and that universally acceptable
legislation will be enacted.

REDUCTION OF THE REGISTRATION TERM

The USTA recommended that the trademark registration
term be reduced from 20 to 10 years, to reduce ''deadwood,'' or marks on the
Federal Register that are not being used but that remain unavailable for others
to use.

As Mr. Kareken, the USTA President, stated during the
Subcommittee hearings:

In terms
of impact on the ''deadwood'' problem, the Trademark Review Commission
calculated that approximately 15 percent, or over 49,200, of the active
registrations issued from 1966 to 1985 would lapse at the end of a ten year
term ... [Reducing the term of registration will increase the frequency of
renewals ...n15

The Committee wholeheartedly adopts the USTA
recommendation to reduce the registration term.

OTHER USTA RECOMMENDATIONS

Other USTA recommendations, such as a system to create
and register security interests in trademarks, also raised questions about
conforming the language actually proposed with both the intent of those making
the recommendations and current practice under the Uniform Commercial Code. The
Subcommittee on Courts, Civil Liberties and the Administration of Justice
deleted these proposals from the bill to await further consideration of their
purpose and their implementation. The Committee also endorses this deletion.

Many other USTA recommendations, largely technical in
nature, were noncontroversial and have been adopted.

CONSUMER STANDING

The courts are divided about whether consumers have
standing to sue under Section 43(a) of the Lanham Act, which has come to
provide remedies for false and misleading advertising and other acts of unfair
competition. The Committee supports the decision of the Subcommittee on Courts,
Civil Liberties and the Administration of Justice to make it explicit that
consumers do have standing under Section 43(a). It endorses the comments of the
Chairman of the Subcommittee on Courts, Civil Liberties and the Administration
of Justice almost ten years ago:

Congress
should act once and for all to confront the delicate issue of standing and
remove inappropriate judicially constructed barriers to the federal judicial
system. Clarity and consistency ought to be the ultimate goals. This would
render the courts more efﬁcient by reducing the amount of

[8]

time
expended in resolving threshold issues; at the same time, it undoubtedly will
increase their overall workload by raising the number of lawsuits ﬁled
in federal court. On balance, however, considering the other reforms discussed
herein, the federal courts will not be unduly burdened by liberal standing
legislation.n16

CONCLUSION

The Committee believes that revision of the Lanham Act
is well warranted. The Committee set aside until the next Congress certain
other proposals suggested by the USTA, to ensure a thorough airing of the
complicated and important issues raised by those proposals. Despite these
deletions, H.R. 5372 as reported by the Committee makes important changes in
the Act that will reconcile the law and current marketplace realities.

IV. SECTION--BY--SECTION ANALYSIS

Section 1 of the bill sets forth its short title, the
''Trademark Law Revision Act of 1988.''

Section 3 of the bill amends Section 1 of the Lanham
Act (15 U.S.C. 1051) by creating a new subsection (b) to permit
applications to register a trademark based on the applicant's bona ﬁde
intention to use the mark in commerce. The existing system, which remains in
effect, permits applications only if actual use of the mark has taken place.

The ''intent to use'' applicant must make certain
required showings to the Patent and Trademark Ofﬁce (PTO), including
those relating to the applicant's bona ﬁde intention to use the mark in
commerce, to the goods on or in connection with which the mark will be used,
and to the ''mode or manner'' in which the mark will be used. In other words,
the application must be limited precisely to just those goods or services to
which the bona ﬁde intention relates.

The Committee's requirement that the applicant have a
bona ﬁde intention to use the mark is intended to eliminate the current
practice of ''token use,'' including the practice of shipping a product across
state lines solely to establish a basis for ﬁling an application. The
Committee recognizes that, especially for certain industries, it may be
impossible to make use of a mark before a business makes a signiﬁcant ﬁnancial
investment in the goods or services to which the mark will apply. To require
the applicant to make that investment before it can seek protection of its mark
works to the applicant's serious disadvantage. By the time the investment is
made, and use occurs, someone else may have used the mark. To protect against
this unfortunate situation, the practice of ''token use'' has arisen. By
permitting applicants to seek protection of their marks through an ''intent to
use'' system, there should be no

[9]

need
for ''token use'' of a mark simply to provide a basis for an application. The
use of the term ''bona ﬁde'' is meant to eliminate such ''token use,''
and to require, based on an objective view of the circumstances, a good faith
intention to eventually use the mark in a real and legitimate commercial sense.
Obviously, what is real and legitimate will vary depending on the practices of
the industry involved, and should be determined based on the standards of that
particular industry.

The Committee recognizes that this system may allow a
person, under certain circumstances, to apply to register more than one mark.
For example, an applicant in good faith may apply to register more than one
mark because he or she is unable to determine without test--marketing which
mark will be the most commercially viable. The requirement that the intention
be bona ﬁde will reduce the risk of stockpiling of marks by someone who
lacks the requisite intention. This requirement works in conjunction with the
procedure by which an applicant may apply to extend an ''intent to use''
application. That procedure is limited, both by the need to justify an
extension by exceptional circumstances and by the 18--month limitation on
extensions. These two provisions are in turn closely tied to the revised deﬁnition
of ''use in commerce'' in Section 29 of the bill, which requires ''bona ﬁde
use of a mark in the ordinary course of trade, and not made merely to reserve a
right in a mark.'' These three provisions will reduce unnecessary and unjustiﬁable
deadwood, and will protect the system from abuse.

Once the ''intent to use'' application has been made,
the Patent and Trademark Ofﬁce will examine it and publish it for
opposition if the Ofﬁce determines that the mark would be registrable
once use is made. Section 13 of the Lanham Act (15 U.S.C.1063). If the
application is not successfully opposed, the Patent and Trademark Ofﬁce
will issue a notice of allowance under new subsection (b)(2) of Section 13 (15
U.S.C. 1063 (b)(2)).

Subsection (b) of Section 1 of the Lanham Act also speciﬁes
that, with the exception of applicants proceeding under Section 44 (15
U.S.C. 1126) (relating to foreign applicants), no mark may be registered
until actual use is made. New subsection (c) permits a showing of use, pursuant
to subsection (a) of Section 1, to be made at any time during the pendency of
the ''intent to use'' application.

Pursuant to new
subsection (d)(1) of Section 1 of the Lanham Act, an ''intent to use''
applicant must make the required use of the mark within six months of the
notice of allowance, and must make certain showings to the Patent and Trademark
Ofﬁce, including those relating to the actual goods or services on or in
connection with which the mark is in use, and the ''mode or manner'' in which
the mark is used. The Ofﬁce may issue an appropriate certiﬁcate
of registration once it examines the statement of use. The Ofﬁce, as
part of the examination, may consider the new information ﬁled by the
applicant and its effect on whether the mark is actually registrable under the
standards set forth in Section 2 (15 U.S.C. 1052). This provision
permits the Ofﬁce to raise issues of registrability that might not be
evident until the applicant makes available specimens showing the mark as used
and/or clarifying the nature of the goods or services involved.

[10]

Subsection (d)(2) sets forth the procedure by which an
''intent to use'' applicant may seek an extension of the application period for
not more than 18 months. The applicant must again make certain showings, and
must specify the ''exceptional circumstances'' justifying the request.

The Committee is well aware that many legitimate
circumstances may prevent an applicant from making the requisite use of a mark
within the initial six month period. For example, a pharmaceutical company may
be unable to use its mark because of delays in the Federal approval procedure.
These delays are not attributable to the applicant, and are the kind of
''exceptional circumstances'' the Committee contemplates. Unavoidable and
legitimate delays are not peculiar to the pharmaceutical industry, and the
Committee intends that the Patent and Trademark Ofﬁce take these
situations into account when determining whether to grant the applicant's
extension request. Substantially automatic and lengthy extension are inappropriate,
given that any extension will further tie up the mark and prevent anyone else
from using it. It is therefore appropriate that extension be granted only upon
a showing of ''exceptional circumstances.''

Paragraphs (3) and (4) of subsection (d) describe the
circumstances under which statements of use may be accepted or refused, and
under which an application will be deemed abandoned.

Section 3 of the bill also makes certain technical and
conforming changes in Section 1 of the Lanham Act.

Section 4 of the bill makes certain technical and
conforming changes in Section 2 of the Lanham Act (15 U.S.C. 1052). It
also amends the proviso, relating to concurrent registration, in subsection
(d). Thus, use prior to the date of any pending application or registration
will no longer be required when the owner of the application or registration
consents to the grant of a concurrent registration to the applicant. However,
the amendment does not alter two important aspects of the law governing the
issuance of concurrent use registrations. First, the Commissioner must still
determine that confusion and deception are not likely to occur if the
concurrent use registration is issued. Second, to prevent such confusion and
deception, the Commissioner continues to be able to impose conditions relating
to the mode and place of use of the marks.

Section 4 also amends subsection (f) of Section 2 of
the Lanham Act (15 U.S.C. 1052), relating to proof of the mark's
acquiring secondary meaning. Under proposed subsection (f), the Commissioner
may consider use during the ﬁve year period preceding the date when the
claim of distinctiveness is made. Under current law, the stated relevant period
is that preceding the application's ﬁling date.

Section 5 of the bill makes a technical and conforming
change in Section 3 of the Lanham Act (15 U.S.C. 1053).

Section 6 of the bill makes a technical and conforming
change in Section 4 of the Lanham Act (15 U.S.C. 1054).

Section 7 of the bill amends Section 5 of the Lanham
Act (15 U.S.C. 1055), to provide that if ﬁrst use of a mark by a
person is controlled by the registrant or applicant, such use shall inure to
the beneﬁt of the registrant or application.

[11]

Section 8 of the bill amends Section 6(b) of the
Lanham Act (15 U.S.C. 1056(b)) by making a technical and conforming
change.

Section 9 of the bill makes certain technical and
conforming changes in Section 7 of the Lanham Act (15 U.S.C. 1057). It
also adds a new subsection (c), which provides that although the mark may not
be registered on the principal register until actual use occurs, nationwide
constructive use will exist once the mark is registered, and will date from the
time of the ﬁling of the application. This constructive use will give
the applicant priority against all but prior users and those who have an
earlier ﬁling date.

Section 9 also redesignates current subsection (c) as
new subsection (d), and ﬁlls a loophole in it that might otherwise be
created by the related to an ''intent to use'' application procedure. While a
company related to an ''intent to use'' applicant generally may make the
requisite use in commerce, such as will not support the granting of a certiﬁcate
of registration to that related company if at the time use was made, the
''intent to use'' applicant and the related company. Otherwise, the Act's
prohibition against certain assignments of ''intent to use'' applicationsn18
could effectively be avoided. The Committee recognizes that the Patent and
Trademark Ofﬁce, in determining whether to grant the certiﬁcate
of registration, may be unable to discover such an agreement. However, the
issue may be relevant to any subsequent litigation, and may well be reveled
during discovery. This procedure is akin to other situations where the PTO is
unable to discern the

circumstances
surrounding the use of a mark. For example, there may be no way for the PTO to
know that a mark is not being used on all of the goods for which it is
registered when an application or Section 8 declaration is ﬁled. This
fact also might come to light only during the discovery process.

Section 10 of the bill amends Section 8(a) of the
Lanham Act (15 U.S.C. 1058a) to reduce the term of registration from 20
years to ten.

Section 11 of the bill conforms to the change in the
original registration term, and amends Section 9(a) of the Lanham Act (15
U.S.C. 1059(a)) by reducing the term of renewal from 20 years to ten.

The amendments made by Section 10 and 11 will greatly
reduce the amount of ''deadwood'' on the Federal trademark register. The
Committee agrees with USTA that the problem of ''deadwood'' is a serious one.
Unused marks on the trademark register prevent others wishing to use those marks
from doing so. These amendments, in conjunction with the amendments to Section
1 of the Lanham Act, relating to the length of an ''intent to use''
application's term and to the requirement that the applicant's intention to use
the mark be bona ﬁde, and to Section 45, relating to the deﬁnition
of ''use in commerce,'' will have a substantial effect on reducing
''deadwood.''

Section 12 amends Section 10 of the Lanham Act (15
U.S.C. 1060) by providing that an ''intent to use'' application may be
assigned

[12]

only
to a successor to the business of the applicant or to that portion of the
business to which the mark relates. The business of the applicant must be
''ongoing and existing.'' This requirement ﬁlls a loophole that would
permit otherwise prohibited assignments. For example, an ''intent to use''
applicant may intend to create a new business in which the mark will be used
but decide, after the application is made, not to do so. Without the
requirement that the business be ''ongoing and existing,'' the applicant would
be able to assign the marks that are the subject of the ''intent to use''
application to another business, which purports to be a successor to the ﬁrst
company's no longer existing business. By closely limiting assignments, these
provisions will protect against trafﬁcking in marks and help ensure that
the intention of the ''intent to use'' applicant is bona ﬁde.

Section 12 of the bill also makes certain technical
and conforming changes in Section 10 of the Lanham Act.

Section 14 of the bill makes certain technical and
conforming changes in Section 13 of the Lanham Act (15 U.S.C. 1063), and
sets forth the procedure by which a certiﬁcate of registration may be
issued to applicant who have actually used their marks and to foreign
applicants under Section 44 of the Act, and by which a notice of registration
is published. It also sets forth the procedures by which a notice of allowance
may be issued to ''intent to use'' applicants.

Section 15 of the bill amends Section 14(c) of the
Lanham Act (15 U.S.C. 1064(c)) to substitute the term ''generic name''
for ''common descriptive name.'' It also provides that a service mark registration
may be cancelled when the mark has become the generic name of the service, an
that if the mark has become the generic name of only some of the goods or
services in the registration, the cancellation will extend only to those goods
and services, and not to the rest of the registration.

Section 18 of the bill amends Section 18 of the Lanham
Act (15 U.S.C. 1068) to give the Trademark Trial and Appeal Board the
authority to cancel a registration in whole or in part, to limit or otherwise modify
the goods or services in a registration or application in order to avoid a
likelihood or confusion, and to determine trademark ownership rights where they
are at variance with the register.

Section 23 of the bill amends Section 30 of the Lanham
Act (15 U.S.C. 1112) to make certain technical and conforming changes.
It adds language to reﬂect that an ''intent to use'' applicant mayapply
to register a mark for all the goods or services on or in connection with which
it has a bona ﬁde intention to use a mark. It also amends the proviso to
permit the Commissioner to eliminate multi----class applications if they become
unwieldy under the ''intent to use'' application system. This is simply an
administrative change, and it will have no effect on the rights of applicants
and registrants or on the costs of applying to register and renew a mark.

Section 24 of the bill makes a technical and
conforming change in Section 32(2) of the Lanham Act (15 U.S.C. 1114(2)).

Section
25 of the bill makes technical and conforming changes in Section 33(a) and
34(d) of the Lanham Act (15

U.S.C.
1115a and 1116). It also amends
Section 33(b) of the Lanham Act (15 U.S.C. 1115(b)(5)) to reﬂect
the constructive use provision established in Section 7(c) of the Act, which
provides that once a mark is registered on the principal register, it has a
nationwide constructive date of ﬁrst use as of the application, ﬁling
date. The legal effect of this provision is comparable to that of the earliest
use of the mark at common law.

Section 26 of the bill amends Section 39 of the Lanham
Act (15 U.S.C. 1121 and 1121(a) to make certain technical and conforming
changes.

Section 27 of the bill amends Section 43(a) of the
Lanham Act (15 U.S.C. 1125(a)) to explicitly permit consumers, as well
as businesses, to use for violations of that section. Section 43(a) has come to
prohibit false and misleading advertising, as well as other acts of unfair
competition. As Representative Fritz Lanham said in 1946 during initial
consideration of the Act, an essential purpose of the law is to ''protect the
public so it may be conﬁdent that, in purchasing a product bearing a
particular trade----mark which it favorably knows, it will get the product
which it asks for and wants to get.'' n19 Consumers, as well as as business,
are entitled to this assurance, and to protection if their rights are violated.

Section 43(a) permits any ''person'' who is damaged to
use. Courts interpreting this language have divided over the question of
whether consumers as well as business have standing to sue. The Second Circuit,
for example, has held that Congress did not intent to grant consumers the right
to sue. Colligan v. Activities Club of New York, Ltd.n20 While noting
that the legislative history of Section 43(a) is unclear, the court nonetheless
found that ''Congress deliberately excluded from coverage virtually all
categories of unfair competition but not false advertising.'' It also found
that granting consumers standing would increase the workload of the Federal
courts and that adequate remedies to protect consumers existed in the
States.n21 The Court's analysis not only is unsupported, but also appears
outdated. First, the Subcommittee heard per----

[14]

suasive
testimony that adequate protection for consumers is not available elsewhere.

[D]uring the past two decades, the Federal Trade
Commission has gradually abandoned its traditional role of bringing cases to
prohibit false and misleading advertising ...In the 1980s, ...FTC enforcement
[was limited] to case involving outright fraud ...The need for a private right
of action for consumers is even more apparent in light of the recent decline in
voluntary self----regulation by the business community ...Only twelve states
have adopted some form of the Uniform Deceptive Trade Practices Act which
provides consumers with a private right of action. Furthermore, such actions
are effective only within the boundaries of the issuing state [citations
omitted].n22

Second, as the USTA acknowledges, while Section 43(a)
originally was ''narrowly drawn and intended to reach false designations or
representations as to the geographical origins of products, [it] has been
widely interpreted to create, in essence, a federal law of unfair
competition.'' n23 ''USTA

Other courts have rejected the Second Circuit's
reasoning. In Thorn v. Reliance Van Co., the Third Circuit found that,

''[u]nder
a plain meaning interpretation of section 43(a) it is this court's function to
grant standing to Thorn if he is a person who believes that he has been damaged
by [the defendant's] use of false representations ...We reject the Colligan decision
to the extent that it is contrary to the plain meaning rule as set out by the
Supreme Court [citations omitted]. n24

The Ninth Circuit, citing 15 U.S.C. 1127, has found that Section
43(a)'s use of the word ''person'' includes ''juristic

persons''
as well as ''natural persons,'' and that the Colligan decision ''has
been sharply criticized.''n25 Other courts have found that the Section's

Purpose
is 'the protection of consumers and competitors from a wide variety of
misrepresentations of products

and
services in commerce ...The section is clearly remedial and should be broadly
construed' ...[The economic

interests it protects include] that of the public to
be free from harmful deception [citations omitted.]n26

A leading trademark commentator has agreed with this
broader reading of Section 43(a). Jerome Gilson, in his treatise ''Trademark
Protection and Practice,'' has written:

[15]

[A]lthough the Section on its face
contains no such restriction, it has

been
held not to protect noncommercial consumers generally but only to protect
commercial plaintiffs from unscrupulous commercial conduct. In the opinion of
this author, this narrow interpretation runs counter to the decisional trend
and is inconsistent with the board application which should be given to such a
remedial statute.n27

The Committee believes that giving consumers standing
to sue under Section 43(a) is consistent with these principles and purposes.

Section 28 of the bill makes certain technical and
conforming changes to Section 44 of the Lanham Act (15 U.S.C. 1126). It
also requires that those applying for registration of a mark in the United States
on the basis of a foreign registration or claiming a foreign priority date must
state a bona ﬁde intention to use the mark in commerce. This requirement
will not affect this country's obligations under the Paris Convention, because
applicants under Section 44(e) are not required to make use of the mark prior
to registration. Section 28 also amends subsection (e) to clarify that use in
commerce is not required prior to registration when the application is based on
a foreign registration in the applicant's country of origin.

Section 29 of the bill amends Section 45 of the Lanham
Act (15 (U.S.C. 1127). It revises and updates the deﬁnitions of
''trademark,'' ''service mark,'' ''certiﬁcation mark,'' and ''collective
mark'' by including any word, name, symbol, or device, or any combination
thereof, which a person has a bona ﬁde intention to use in commerce and
which that person applies to register on the principal register.

Section 29 also amends the deﬁnition of ''use
in commerce'' in Section 45, to require the bona ﬁde use of a mark in
the ordinary course of trade. While use made merely to reserve a right in a
mark will not meet this standard, the Committee recognizes that the ''ordinary
course of trade'' varies from industry to industry. Thus, for example, it might
be the ordinary course of trade for an industry that sells expensive or
seasonal products to make infrequent sales. Similarly, a pharmaceutical company
that markets a drug to treat a rare disease will make correspondingly few sales
in the ordinary course of its trade; the company's shipment to clinical
investigators during the Federal approval process will also be in it ordinary
course of trade. The deﬁnition of ''use in commerce'' is consistent with
the Committee's intention to eliminate the practice of making a single
shipment----''token use'' solely for the purpose of reserving a mark. See
discussion of Section 3 of the bill, supra.

Section 29 also amends the term ''abandonment of
mark'' in Section 45 so that it is consistent with the new deﬁnition of
''use of commerce.''

Section 30 adds a new Section 51 to the Act, providing
that the ten year registration term will apply to all registrations that issue
on or after the effective date of the legislation.

[16]

Section 31 provides that the effective date of the
legislation is one year after the Trademark Law Revision Act of 1988 is enacted.

V. FEDERAL ADVISORY COMMITTEE ACT OF 1972

The Committee ﬁnds that this legislation does
not create any new advisory committee within the meaning of the Federal
Advisory Committee Act of 1972.

VI.
OVERSIGHT FINDINGS The Committee makes no oversight ﬁndings with respect
to this legislation. In regard to clause 2(1)(3)(D) of rule XI of the Rules of
the House of Representatives, no oversight ﬁndings have been submitted
to the Committee by the Committee on Government Operations.

VII.
STATEMENT OF THE COMMITTEE ON GOVERNMENT OPERATIONSNo statement has been
received on the legislation from the House Committee on Government Operations.

VIII. NEW BUDGET7 AUTHORITY

In regard to clause 2(1)(3)(B) of rule XI of the Rules
of the House of Representatives, the bill creates no new budget authority on
increased tax expenditures for the Federal judiciary.

IX. INFLATIONARY IMPACT STATEMENT

Pursuant to clause 2(1)(4) of rule XI of the Rules of
the House of Representatives, the Committee feels that the bill will have no foreseeable
inﬂationary impact on prices or costs in the operation of the national
economy.

X. COST ESTIMATE

In regard to clause 7 of rule XIII of the Rules of the
House of Representatives, the Committee agrees with the cost estimate of the
Congressional Budget Ofﬁce.

XI. STATEMENT OF THE CONGRESSIONAL BUDGET OFFICE

U.S. CONGRESS, CONGRESSIONAL BUDGET OFFICE,

Washington, DC, September

29, 1988.

HON. PETER W. RODINO, Jr.,

Chairman, Committee on the Judiciary, House of
Representatives, Washington, DC.

DEAR MR. CHAIRMAN: The Congressional Budget Ofﬁce
has reviewed H.R. 5372, the Trademark Law Revision Act of 1988, as ordered
reported by the House Committee on the Judiciary, September 27, 1988. We expect
that enactment of the bill would not result in any additional net cost to the
federal government.

H.R. 5372 would amend the Trademark Act of 1946 by
establishing a system whereby individuals or concerns could apply to register
marks in the U.S. Patent and Trademark Ofﬁce (PTO) based on

[17]

an
intention to use the mark in commerce. In addition, the bill would reduce the
term of a trademark registration from twenty years to ten years. Also,
additional requirements for maintaining a registration would be imposed. A ﬁnal
provision would permit consumers to sue companies for false advertising in
connection with a trademarked product.

Based on information from PTO, we expect that the
number of trademark applications processed each year would increase, resulting
in greater processing costs. Because these additional costs would be fully
funded by registration fees paid by applicants, we expect that no net increase
in outlays would result.

We expect that other provisions of the bill would have
no signiﬁcant budget impact.

No costs would be incurred by state or local
governments as a result of enactment of this bill.

If you wish further details on this estimate, we will
be pleased to provide them. The CBO staff contact is Douglas Criscitello, who
can be reached on 226--2850.

Sincerely,

JAMES L. BLUM,

Acting
Director

XII. COMMITTEE VOTE On September
27, 1988, the Committee, with a quorum of Members being present, favorably
reported H.R. 5372 by voice vote, no objections being heard. CHANGES IN
EXISTING LAW MADE BY THE BILL, AS REPORTED In compliance with clause 3 of rule
XIII of the Rules of the House of Representatives, changes in existing law made
by the bill, as reported, as shown as follows
(existing law proposed to be omitted is enclosed in black brackets, new matter
is printed in italic, existing law in which no change is proposed is shown in
roman): ACT OF JULY 5, 1946

AN ACT To
provide for the registration and protection of trademarks used in commerce, to
carry out the provisions of certain international conventions, and for other
purposes TITLE I----THE PRINCIPAL REGISTER SECTION 1.(a) The owner of a
trademark used in connection [may register his] may apply to register his or
her trademark under this Act on the principal register hereby established:
[(a)] (1) By ﬁling in the Patent and Trademark Ofﬁce--

[(1)] (A)
a written application, in such form as may be prescribed by the
Commissioner, veriﬁed by the applicant, or by a member of the ﬁrm
or an ofﬁcer of the corporation or association applying, specifying
applicant's domicile and citizenship, the date of applicant's ﬁrst use
of the mark, the date of applicant's ﬁrst use of the mark in commerce,
the goods in connection with which the mark is used and the mode or manner in
which the mark is used in connection with such

[18]

goods, and including a statement to the effect that
the person making the veriﬁcation believes himself, or the ﬁrm,
corporation, or association in whose behalf he makes the veriﬁcation, to
be the owner of the mark sought to be registered, that the mark is in use in
commerce, and that no other person, ﬁrm, corporation, or association, to
the best of his knowledge and belief, has the right to use such mark in commerce
either in the identical form thereof or in such near resemblance thereto as to
be likely, when [applied to] used on or in connection with the goods of
such other persons, to cause confusion, or to cause mistake, or to deceive: Provided,
That in the case of every application claiming concurrent use the applicant
shall state exceptions to his claim of exclusive use, in which he shall
specify, to the extent of his knowledge, any concurrent use by others, the
[goods in connection] goods on or in connection with which and the areas
in which each concurrent use exists, the periods of each use, and the goods and
area for which the applicant desires registration;

[(2)] (B) a drawing of the mark; and

[(3)] (C) such numbers of specimens of
facsimiles of the mark as [actually] used as may be required by the
Commissioner.

[(b)] (2) By paying into the patent and
Trademark Ofﬁce the [ﬁling] prescribed fee.

[(c)] (3) By complying with such rules or
regulations, not inconsistent with law, as may be prescribed by the Commissioner.
regulations, not inconsistent with law, as may be prescribed by the
Commissioner.

(b) A person who has a bona ﬁde intention to
use a trademark in commerce may apply to register the trademark under this Act
on the principal register hereby established:

(1) By ﬁling in the Patent and Trademark Ofﬁce--

(A) a
written application, in such form as may be prescribed by the Commissioner, veriﬁed
by the applicant, or by a member of the ﬁrm or an ofﬁcer of the
corporation or association applying, specifying applicant's domicile and
citizenship, applicant's bona ﬁde intention to use the mark in commerce,
the goods on or in connection with which the applicant has a bona ﬁde
intention to use the mark and the mode or manner in which the mark is intended
to be used on or in connection with such goods, including a statement to the
effect that the person making the veriﬁcation believes himself or
herself, or the ﬁrm, corporation, or association in whose behalf he or
she makes the veriﬁcation, to be entitled to use the mark in commerce,
and that no other person, ﬁrm, corporation, or association, to the best
of his or her knowledge and belief, has the right to use such mark in commerce
either in the identical form there or in such near resemblance thereto as to be
likely, when used on or in connection with the goods of such other person, to
cause confusion, or to cause mistake, or to deceive: however, with the
exception of applications ﬁled pursuant to section 44, no mark shall be
registered until the applicant has met the requirements of subsection (d) of
this section; and

(B) a drawing of the mark.

[19]

(2) By paying
in the Patent and Trademark Ofﬁce the prescribed fee.

(3) By
complying with such rules or regulations, not inconsistent with law, as may be
prescribed by the Commissioner.

(c) At any
time during examination of an application ﬁled under subsection (b), an
applicant who has made use of the mark in commerce may claim the beneﬁts
of such use for purposes of this Act, by amending his or her application to
bring it into conformity with the requirements of subsection (a)

(d)(1) Within
six months following the date of the notice of allowance provided in section
13(b)(2), the applicant must ﬁle in the Patent and Trademark Ofﬁce,
together with such number of specimens or facsimiles of the mark as used in
commerce as may be required by the Commissioner and payment of the prescribed
fee, a veriﬁed statement that the mark is in use in commerce and
specifying the date of applicant's ﬁrst use of the mark in commerce,
those goods or services speciﬁed in the notice of allowance on or in
connection with which the mark is used in commerce and the mode or manner in
which the mark is used on or in connection with such goods or services. Subject
to examination and acceptance of the statement of use, the mark shall be
registered in the Patent and Trademark Ofﬁce, and a certiﬁcate of
registration shall be issued for those goods or services recited in the
statement of use for which the mark is entitled to registration, and notice of
registration shall be published in the Ofﬁcial Gazette of the Patent and
Trademark Ofﬁce. Such examination may include an examination of the
factors set forth in subsection (a) through (f) of section 2. The notice of
registration shall specify the goods or services for which the mark is
registered.

(2) In
exceptional circumstances the Commissioner may, upon written request of the
applicant before the expiration of the 6--month period required by paragraph
(1), extend the time, for periods aggregating not more than 18 months, for ﬁling
a veriﬁed statement of use required by such paragraph. Such request
shall be accompanied by a veriﬁed statement that the applicant has a
continued bona ﬁde intention to use the mark in commerce and specifying
those goods or services identiﬁed in the notice of allowance on or in
connection with which the applicant has a continued bona ﬁde intention
to use the mark in commerce. Any request for an extension under this paragraph
shall be accompanied by payment of the prescribed fee.

(3) The
Commissioner shall notify any applicant who ﬁles a statement of use of
the acceptance or refusal thereof and, if the statement of use is refused, the
reasons therefor. An applicant may amend the statement of use.

(4) The
failure to timely ﬁle a veriﬁed statement of use under this
subsection shall be considered to be an abandonment of the application.

[(d)] (e) If the applicant is not domiciled in
the United States he shall designate by a written document ﬁled in the
Patent and Trademark Ofﬁce the name and address of some person resident
in the United States on whom may be served notices or process in proceedings
affecting the mark. Such notices or process may be served upon the person so
designated by leaving with him or mailing to him a copy thereof at the address speciﬁed
in the last desig--

[20]

nation
so ﬁled. If the person so designated cannot be found at the address
given in the last designation, such notice or process may be served upon the
Commissioner.

MARKS REGISTRABLE ON THE PRINCIPAL REGISTER

SEC. 2. No trademark by which the goods of the
applicant may be distinguished from the goods of others shall be refused
registration on the principal register on account of its nature unless it--

(a)* * ******

[(d)
consists of or comprises a mark which so resembles a mark registered in the
Patent and Trademark Ofﬁce or a mark or trade name previously used in
the United States by another and not abandoned, as to be likely, when applied
to the goods of the applicant, to cause confusion, or to cause mistake, or to
deceive: Provided, That when the Commissioner determines that confusion,
mistake, or deception is not likely to result from the continued use by more
than one person of the same or similar marks under conditions and limitations
as to the mode or place of use of the marks or the goods in connection with
which such marks are used, concurrent registrations may be issued to such
persons when they have become entitled to use such marks as a result of their
concurrent lawful use in commerce prior to (i) the earliest of the ﬁling
dates of the applications pending or of any registration issued under this Act;
or (ii) July 5, 1947, in the case of registrations previously issued under the
Act of March 3, 1881, or February 20, 1905, and continuing in full force and
effect on that date; or (iii) July 5, 1947, in the case of applications ﬁled
under the Act of February 20, 1905, and registered after July 5, 1947.
Concurrent registrations may also be issued by the Commissioner when a court of
competent jurisdiction has ﬁnally determined that more than one person
is entitled to use the same or similar marks in commerce. In issuing concurrent
registrations, the Commissioner shall prescribe conditions and limitations as
to the mode or place of use of the mark or the goods in connection with which
such mark is registered to the respective persons.]

(d) consists of or comprises a mark which so resembles
a mark registered in the Patent and Trademark Ofﬁce, or a mark or trade
name previously used in the United States by another and not abandoned, as to
be likely, when applied on or in connection with the goods of the applicant, to
cause confusion, or to cause mistake, or to deceive: Provided, That if the
Commissioner determines that confusion, mistake, or deception is not likely to
result from the continued use by more than one person of the same or similar
marks under conditions and limitations as to the mode or place of use of the
marks or the goods on or in connection with which such marks are used,
concurrent registrations may be issued to such persons when they have become
entitled to sue such marks as a result of their concurrent lawful use in
commerce prior to (1) the earliest of the ﬁling dates of the
applications pending or of any registration issued under [21] this Act; (2)
July 5, 1947, in the case of registrations previously issued under the Act of
March, 3, 1881, or February 20, 1905, and continuing in full force and effect
on that date; or (3) July 5, 1947, in the case of applications ﬁled
under the Act of February 20, 1905, and registered after July 5, 1947.
Concurrent registrations may also be issued by the Commissioner when a court of
competent jurisdiction has ﬁnally determined that more than one person
is entitled to use the same or similar marks in commerce. In issuing concurrent
registrations, the Commissioner shall prescribe conditions and limitations as
to the mode or place of use of the mark or the goods on or in connection with
which such mark is registered to the respective persons;

(e) consists of a
mark which, (1) when [applied to] used on or in connection with the
goods of the applicant is merely descriptive or deceptively misdescriptive of
them, or (2) when [applied to] used on or in connection with the goods
of the applicant is primarily geographically descriptive or deceptively misdescriptive
of them, except as indications of regional origin may be registrable under
section 4 hereof, or (3) is primarily merely a surname;

(f) except as
expressly excluded in paragraphs (a), (b), (c), and (d) of this section,
nothing herein shall prevent the registration of a mark used by the applicant
which has become distinctive of the applicant's goods in commerce. The
Commissioner may accept as prima facie evidence that the mark has become
distinctive, as [applied to] used on or in connection with the
applicant's goods in commerce, proof of substantially exclusive and continuous
use thereof as a mark by the applicant in commerce for the [ﬁve years
next preceding the date of the ﬁling of the application for its
registration.] ﬁve years before the date on which the claim of
distinctiveness is made.

SERVICE MARKS REGISTRABLE

SEC. 3.
Subject to the provisions relating to the registration of trademarks, so far as
they are applicable, service

marks [used in commerce] shall be registrable,
in the same manner and with the same effect as are trademarks, and when

registered they shall be entitled
to the protection provided herein in the case of trademarks, except when used
so as to

represent falsely that the owner
thereof marks or sells the goods on which such mark is used. The Commissioner
may

establish a separate register for such service marks.
Applications and procedure under this section shall conform as nearly as
practicable to those prescribed for the registration of trademarks.

COLLECTIVE AND CERTIFICATION MARKS REGISTRABLE

SEC. 4. Subject to the provisions relating to the
registration of trademarks, so far as they are applicable, collective and certiﬁcation
marks, including indications of regional [origin used in com—

[22]

merce,]
origin, shall be registrable under this Act, in the same manner and with
the same effect as are trademarks, by persons, and nations, States,
municipalities, and the like, exercising legitimate control over the use of the
marks sought to be registered, even though not possessing an industrial or
commercial establishment, and when registered they shall be entitled to the
protection provided herein in the case of trademarks, except when used so as to
represent falsely that the owner or a user thereof makes or sells the goods or
performs the services on or in connection with which such mark is used. The
Commissioner may establish a separate register for such collective marks and certiﬁcation
marks. Applications and procedure under this section shall conform as nearly as
practicable to those prescribed for the registration of trademarks.

USE BY RELATED COMPANIES

SEC. 5. Where a registered mark or a mark sought to be
registered is or may be used legitimately by related companies, such use shall
inure to the beneﬁt of the registrant or applicant for registration, and
such use shall not affect the validity of such mark or of its registration,
provided such mark is not used in such manner as to deceive the public. If ﬁrst
use of a mark by a person is controlled by the registrant or applicant for
registration of the mark in respect to the nature and quality of the goods or
services, such ﬁrst use shall inure to the beneﬁt of the
registrant or applicant, as the case may be.

DISCLAIMERS

SEC.6.(a) The Commissioner may require the applicant
to disclaim an unregistrable component of a mark otherwise registrable. An
applicant may voluntarily disclaim a component of a mark sought to be
registered.

(b) No
disclaimer, including those made under [paragraph (d)] subsection (e) of
section 7 of this Act, shall prejudice or affect the applicant's or
registrant's rights then existing or thereafter arising in the disclaimed
matter, or his right of registration on another application if the disclaimed
matter be or shall have become distinctive of his goods or services.

CERTIFICATESSEC. 7.(a) * * ******

(c) Contingent on the registration of a mark on the
principal register provided by this Act, the ﬁling of the application to
register such mark shall constitute constructive use of the mark, conferring a
right of priority, nationwide in effect, on or in connection with the goods or
services speciﬁed in the registration against any other person except
for a person whose mark has not been abandoned and who, prior to such ﬁling--

(1) has used
the mark;

(2) has ﬁled
an application to register the mark on the principal register which is pending
or has resulted in registration of the mark on the principal register; or

[23]

(3) has ﬁled
a foreign application to register the mark on the basis of which he or she has
acquired a right of priority, and has timely ﬁled an application under
section 44(d) to register the mark on the principal register which is pending
or has resulted in registration of the mark on the principal register.

[(c)] (d) A certiﬁcate of registration
of a mark may be issued to the assignee of the applicant [, but the]. No certiﬁcate
of registration may be issued to a related company of the applicant if the
application was ﬁled under section 1(b), if the use in commerce relied
upon in the afﬁdavit of use was use by the related company and if, at
the time such use was made, there was an agreement between the applicant and
the related company that the mark should be assigned to the related company.
The assignment must ﬁrst be recorded in the Patent and Trademark Ofﬁce.
In case of change of ownership the Commissioner shall, at the request of the
owner and upon a proper showing and the payment of the [fee herein provided] prescribed
fee, issue to such assignee a new certiﬁcate of registration of the
said mark in the name of such assignee, and for the unexpired part of the
original period.

[(d)] (e) Upon
application of the registrant the Commissioner may permit any registration to
be surrendered for cancelation, and upon cancelation appropriate entry shall be
made in the records of the Patent and Trademark Ofﬁce. Upon application
of the registrant and payment of the prescribed fee, the Commissioner for good
cause may permit any registration to be amended or to be disclaimed in part: Provided,
That the amendment or disclaimer does not alter materially the character of the
mark. Appropriate entry shall be made in the records of the Patent and
Trademark Ofﬁce and upon the certiﬁcate of registration or, if
said certiﬁcate is lost or destroyed, upon a certiﬁed copy
thereof.

[(e)] (f) Copies of any records, books, papers,
or drawings belonging to the Patent and Trademark Ofﬁce relating to
marks, and copies of registrations, when authenticated by the seal of the
Patent and Trademark Ofﬁce and certiﬁed by the Commissioner, or
in his name by an employee of the Ofﬁce duly designated by the
Commissioner, shall be evidence in all cases wherein the originals would be
evidence; and any person making application therefor and paying the [fee
required by law] prescribed fee shall have such copies.

[(f)] (g) Whenever a material mistake in a
registration, incurred through the fault of the Patent and Trademark Ofﬁce,
is clearly disclosed by the records of the Ofﬁce a certiﬁcate
stating the fact and nature of such mistake, shall be issued without charge and
recorded and a printed copy thereof shall be attached to each printed copy of
the registration and such corrected registration shall thereafter have the same
effect as if the same had been originally issued in such corrected form, or in
the discretion of the Commissioner a new certiﬁcate a registration may
be issued without charge. All certiﬁcates of correction heretofore
issued in accordance with the rules of the Patent and Trademark Ofﬁce
and the registrations to which they are attached shall have the same force and
effect as if such certiﬁcates and their issue had been speciﬁcally
authorized by statute.

[24]

[(g)] (h) Whenever a mistake has been made in a
registration and a showing has been made that such mistake occurred in good
faith through the fault of the applicant, the Commissioner is authorized to
issue a certiﬁcate of correction or, in his discretion, a new certiﬁcate
upon the payment of the [required fee] prescribed fee: Provided, That
the correction does not involve such changes in the registration as to require
republication of the mark.

DURATION

SEC. 8. (a) Each certiﬁcate of registration
shall remain in force for [twenty] ten years: Provided, That the
registration of any mark under the provisions of this Act shall be canceled by
the Commissioner at the end of six years following its date, unless within 1
year next preceding the expiration of such six years the registrant shall ﬁle
in the Patent and Trademark Ofﬁce an afﬁdavit showing that said
mark is in use in commerce or showing that its nonuse is due to special circumstances
which excuse such nonuse and is not due to any intention to abandon the mark.
Special notice of the requirement for such afﬁdavit shall be attached to
each certiﬁcate of registration.

*****

RENEWAL

SEC. 9. (a) Each registration may be renewed for
periods of [twenty] ten years from the end of the expiring period upon
payment of the prescribed fee and the ﬁling of a veriﬁed
application therefor, setting forth those goods or services recited in the
registration on or in connection with which the mark is still in use in
commerce and having attached thereto a specimen or facsimile showing current
use of the mark, or showing that any nonuse is due to special circumstances
which excuse such nonuse and it is not due to any intention to abandon the
mark. Such application may be made at any time within six months before the
expiration of the period for which the registration was issued or renewed, or
it may be made within three months after such expiration of payment of the
additional fee herein prescribed.

(b) If the
Commissioner refuses to renew the registration, he shall notify the registrant
of his refusal and the reasons therefor.

(c) An applicant
for renewal not domiciled in the United States shall be subject to and comply
with the provisions of section 1(d) hereof.

ASSIGNMENT

SEC. 10. A
registered mark or a mark for which application to register has been ﬁled
shall be assignable with the goodwill of the business in which the mark is
used, or with that part of the goodwill of the business connected with the use
of and symbolized by the mark, [and in any such assignment]. However, no
application to register a mark under section 1(b) shall be assignable prior to
the ﬁling of the veriﬁed statement of use under section 1(d),
except to a successor to the business of the applicant, or portion thereof, to
which the mark pertains, if that business is ongoing and existing. [25]In
any assignment authorized by this section it shall not be necessary to
include the goodwill of the business connected with the use of and symbolized
by any other mark used in the business or by the name or style under which the
business is conducted. Assignments shall be by instruments in writing duly
executed. Acknowledgment shall be prima facie evidence of the execution of an
assignment and when recorded in the Patent and Trademark Ofﬁce the
record shall be prima facie evidence of execution. An assignment shall be void
as against any subsequent purchaser for a valuable consideration without
notice, unless it is recorded in the Patient and Trademark Ofﬁce within
3 months after the date thereof or prior to such subsequent purchase. A
separate record of assignments submitted for recording hereunder shall be
maintained in the Patent and Trademark Ofﬁce. An assignee not domiciled
in the United States shall be subject to and comply with the provisions of
section [1 (d)] 1 (e) hereof.

*****

PUBLICATION

SEC. 12. (a) Upon the ﬁling of an application
for registration and payment of the [fee herein provided] prescribed fee,
the Commissioner shall refer the application to the examiner in charge of the
registration of marks, who shall cause an examination to be made and, if on
such examination it shall appear that the applicant is entitled [to
registration, the] to registration, or would be entitled to registration
upon the acceptance of the statement of use required by section 1(d) of this
Act, the Commissioner shall cause the mark to be published in the Ofﬁcial
Gazette of the Patent Ofﬁce Provided, That in the case of an
applicant claiming concurrent use, or in the case of an application to be
placed in an interference as provided for in section 16 of this Act, the mark,
if otherwise registrable, may be published subject to the determination of the
rights of the parties to such proceedings.

*****

OPPOSITION

SEC. 13. (a) Any person who believes that he
would be damaged by the registration of a mark upon the principal register may,
upon payment of the [required fee] prescribed fee, ﬁle an
opposition in the Patent and Trademark Ofﬁce, stating the grounds therefor,
within thirty days after the publication under subsection (a) of section 12 of
this Act of the mark sought to be registered. Upon written request prior to the
expiration of the thirty--day period, the time for ﬁling opposition
shall be extended for an additional thirty days, and further extensions of time
for ﬁling opposition may be granted by the Commissioner for good cause
when requested prior to the expiration of an extension. The Commissioner shall
notify the applicant of each extension of the time for ﬁling opposition.
An opposition may be amended under such conditions as may be prescribed by the
Commissioner.

(b) Unless
registration is successfully opposed--

(1) a mark
entitled to registration on the principal register based on an application ﬁled
under section 1(a) or pursuant to

[26]

section 44,
shall be registered in the Patent and Trademark Ofﬁce, and a certiﬁcate
of registration issued, and notice of the registration shall be published in
the Ofﬁcial Gazette of the Patent and Trademark Ofﬁce; or

(2) a notice
of allowance shall be issued to the applicant if the applicant applied for
registration under section 1(b).

CANCELATION

SEC. 14. A petition to cancel a registration of a
mark, stating the grounds relied upon, may, upon payment of the prescribed fee,
be ﬁled by any person who believes that he is or will be damaged by the
registration of a mark on the principal register established by this Act, or
under the Act of March 3, 1881, or the Act of February 20, 1905--

(a)* * ******

[(c) at any time if the registered mark becomes the
common descriptive name of an article or substance, or

has been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of section 4

or of subsections (a), (b), or (c) of section 2 of this Act for a
registration hereunder, or contrary to similar

prohibitory
provisions of said prior Acts for a registration thereunder, or if the
registered mark is being used by, or with the permission of, the registrant so
as to misrepresent the source of the goods or services in connection with which
the mark is used. A registered mark shall not be deemed to be the common
descriptive name of goods or services solely because such mark is also used as
a name of or to identify a unique product or service. The primary signiﬁcance
of the registered mark to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered mark has become the
common descriptive name of goods or services in connection with which it has
been used; or]

(c) at any time if the registered mark becomes the
generic name for the goods or services, or a portion thereof, for which it is
registered, or has been abandoned, or its registration was obtained
fraudulently or contrary to the provisions of section 4 or of subsection (a),
(b), or (c) of section 2 for a registration hereunder, or contrary to similar
prohibitory provisions of such prior Acts for a registration thereunder, or if
the registered mark is being used by, or with the permission of, the registrant
so as to misrepresent the source of the goods or services on or in connection
with which the mark is used. If the registered mark becomes the generic name
for less than all of the goods or services for which it is registered, a
petition to cancel the registration for only those goods or services may be ﬁled.
A registered mark shall not be deemed to be the generic name of goods or
services solely because such mark is also used as a name of or to identify a
unique product or service. The primary signiﬁcance of the registered
mark to the relevant public rather than purchaser motivation shall be the test
for determining whether the regis

[27]

tered mark has become the generic name of goods or
services on or in connection with which it has been used; or

*****

SEC. 15.
Except on a ground for which application to cancel may be ﬁled at any
time under subsections (c) and (e) of section 14 of this Act, and except to the
extent, if any, to which the use of a mark registered on the principal register
infringes a valid right acquired under the law of any State or Territory by use
of a mark or trade name continguing from a date prior to the date of
registration under this Act of such registered mark, the right of the
registrant to use such registered mark in commerce for the goods or services on
or in connection with which such registered mark has been in continuous use for
5 consective years subsequent to the date of such registration and is still in
use in commerce, shall be incontestable: Provided, That--

(1) ** ******

(4) no
incontestable right shall be acquired in a mark name which is [the common
descriptive name of any article or substance, patented or otherwise] the
generic name for the goods or services or a portion thereof, for which it is
registered.

*****

INTERFERENCE

SEC. 16. Upon petition showing extraordinary
circumstances, the Commissioner may declare that an interference exists when
application is made for the registration of a mark which so resembles a mark
previously registered by another, or for the registration of which another has
previously made application, as to be likely when [applied to the goods or when
used in connection with the services] used on or in connection with the
goods or services of the applicant to cause confusion or mistake or to
deceive. No interference shall be declared between an application and the
registration of a mark the right to the use of which has become incontestable.

*****

SEC. 18.
In such proceedings the Commissioner may refuse to register the opposed mark,
may cancel [or restrict] the registration, in whole or in part, may modify
the application or registration by limiting the goods or services speciﬁed
therein, may otherwise restrict or rectify with respect to the register the
registration of a registered mark, or may refuse to register any or all of
several interfering marks, or may register the mark or marks for the person or
persons entitled thereto, as the rights of the parties hereunder may be
established in the proceedings: Provided, That in the case of the
registration of any mark based on concurrent use, the Commissioner shall
determine and ﬁx the conditions and limitations provided for in
subsection (d) of section 2 of this Act.

SEC. 21.
(a)(1) An applicant for registration of a mark, party to an interference
proceeding, party to an opposition proceeding, party to an application to
register as a lawful concurrent user, party to a cancellation proceeding, a
registrant who has ﬁled an afﬁdavit as

[28]

provided in section 8, or an
applicant for renewal, who is dissatisﬁed with the decision of the
Commissioner or Trademark Trial and Appeal Board, may appeal to the United
States Court of Appeals for the Federal Circuit thereby waiving his right to
proceed under [section 21(b)] subsection (b) hereof: Provided,
That such appeal shall be dismissed if any adverse party to the proceeding,
other than the Commissioner, shall, within twenty days after the appellant has ﬁled
notice of appeal according to [section 21(a)(2) hereof,] paragraph (2) of
this subsection, ﬁles notice with the commissioner that he elects to
have all further proceedings conducted as provided in [section 21(b)] subsection

(b)
hereof. Thereupon the appellant shall
have thirty days thereafter within which to ﬁle a civil action under
said [section 21(b)] subsection (b), in default of which the decision
appealed from shall govern the further proceedings in the case.

*****

(b)(1) Whenever a person authorized by [section 21(a)]
subsection (a) hereof to appeal to the United States Court of Appeals
for the Federal Circuit is dissatisﬁed with the decision of the
Commissioner or Trademark Trial and Appeal Board, said person may, unless
appeal has been taken to said United States Court of Appeals for the Federal
Circuit have remedy by a civil action if commenced within such time after such
decision, not less than sixty days, as the Commissioner appoints or as provided
in [section 21(a).] subsection (a). The court may adjudge that an
applicant is entitled to a registration upon the application involved, that a
registration involved should be canceled, or such other matter as the issues in
the proceedings require, as the facts in the case may appear. Such adjudication
shall authorize the Commissioner to take any necessary action, upon compliance
with the requirements of law.

*****

TITLE II----THE SUPPLEMENTAL REGISTER

*****

CANCELLATION

SEC. 24. Marks for the supplemental register shall not
be published for or be subject to opposition, but shall be published on
registration in the Ofﬁcial Gazette of the Patent and Trademark Ofﬁce.
Whenever any person believes that he is or will be damaged by the registration
of a mark on this register he may at any time, upon payment of the prescribed
fee and the ﬁling of a [veriﬁed] petition stating the ground therefor,
apply to the Commissioner to cancel such registration. The Commissioner shall
refer such application to the Trademark Trial and Appeal Board which shall give
notice thereof to the registrant. If it is found after a hearing before the
Board that the registrant was not entitled to register the mark at the time of
his application for registration thereof, or that the

[29]

mark
is not used by the registrant or has been abandoned, the registration shall be
canceled by the Commissioner.

*****

GENERAL PROVISIONS

SEC. 26. The provisions of this Act shall govern so
far as applicable applications for registration and registrations on the
supplemental register as well as those on the principal register, but
applications for and registrations on the supplemental register shall not be
subject to or receive the advantages of sections 1(b), 2(e), 2(f), 7(b),
7(c), 12(a), 13 to 18, inclusive, 22, 33, and 42 of this Act.

*****

TITLE III----NOTICE OF REGISTRATION

SEC. 29. Notwithstanding the provisions of section 22
hereof, a registrant of a mark registered in the Patent Ofﬁce, may give
notice that his mark is registered by displaying with the mark [as used] the
words ''Registered in U.S. Patent and Trademark Ofﬁce'' or ''Reg. U.S.
Pat. & Tm. Off.'' or the letter R enclosed within a circle, thus (R) and in
any suit for infringement under this Act by such a registrant failing to give
such notice of registration, no proﬁts and no damages shall be recovered
under the provisions of this Act unless the defendant had actual notice of the
registration.

TITLE IV----CLASSIFICATION

SEC. 30. The Commissioner may establish a classiﬁcation
of goods and services, for convenience of Patent and

Trademark
Ofﬁce Administration, but not to limit or extend the applicant's or
registrant's rights. The applicant may [ﬁle an application] apply
to register a mark for any or all of the [goods and services upon or in
connection with which he is actually using the mark: Provided, That when
such goods or services fall within a plurality of classes, a fee equaling the
sum of the fees for ﬁling an application in each class shall be paid,
and the Commissioner may issue a single certiﬁcate of registration for
such mark.] goods or services on or in connection with which he or she is
using or has bona ﬁde intention to use the mark in commerce: Provided,
That if the Commissioner by regulation permits the ﬁling of an
application for the registration of a mark for goods or services which fall
within a plurality of classes, a fee equaling the sum of the fees for ﬁling
an application in each class shall be paid, and the Commissioner may issue a
single certiﬁcate of registration for such mark.

*****

TITLE VI----REMEDIES

SEC. 32. (1)* * *

(2)
Notwithstanding any other provision of this Act, the remedies given to the
owner of the right infringed shall be limited as follows: (a) Where an
infringer is engaged solely in the business of

[30]

printing the
mark for others and establishes that he was an innocent infringer the owner of
the right infringed shall be entitled as against such infringer only to an
injunction against future printing; (b) where the infringement complained of is
contained in or as part of paid advertising matter in a newspaper, magazine, or
other similar periodical the remedies of the owner of the right infringed as
against the publisher or distributor of such newspaper, magazine or other
similar periodical shall be conﬁned to an injunction against the
presentation of such advertising matter in future issues of such newspapers,
magazines, or other similar periodical: Provided, That these limitations
shall apply only to innocent infringers; (c) [injunction] injunctive relief
shall not be available to the owner of the right infringed in respect of an
issue of a newspaper, magazine, or other similar periodical containing
infringing matter when restraining the dissemination of such infringing matter
in any particular issue of such periodical would delay the delivery of such
issue after the regular time therefor, and such delay would be due to the
method by which publication and distribution of such periodical is customarily
conducted in accordance with sound business practice, and not to any method or
device adopted for the evasion of this section or to prevent or delay the
issuance of an injunction or restraining order with respect to such infringing
matter.

SEC. 33. (a) Any
registration issued under the Act of March 3, 1881, or the Act of February 20,
1995, or of a mark registered on the principal register provided by this Act
and owned by a party to an action shall be admissible in evidence and shall be
prima facie evidence of or in connection with registrant's exclusive
right to use the registered mark in commerce on the goods or services speciﬁed
in the registration subject to any conditions or limitations stated therein,
but shall not preclude an opposing party from proving any legal or equitable
defense or defect which might have been asserted if such mark had not been
registered.

(b) If the right
to use the registered mark has become incontestable under section 15 hereof,
the registration shall be conclusive evidence of the registrant's exclusive
right to use the registered mark in commerce on or in connection with the goods
or services speciﬁed in the afﬁdavit ﬁled under the
provisions of said section 15 subject to any conditions or limitations stated
therein except when one of the following defenses or defects is established:

(1) ** ******

(5) That the mark
whose use by a party is charged as an infringement was adopted without
knowledge of the registrant's prior use and has been continuously used by such
party or those in privity with him from a date prior to [registration of the
mark under this Act or] (A) the date of constructive use of the mark
established pursuant to section 7 (c), (B) the registration of the mark under
this Act if the application for registration is ﬁled prior to the
effective date of the Trademark Law Revision Act of 1988, or (C) publication
of the registered mark under subsection (c) of section 12 of this Act: Provided,
however, That this defense or defect shall apply only for the area in which
such continuous prior use is proved; or

[31]

SEC. 34. (a) * **

*****

(d)(1)(A) In the case of a civil action arising under
section 32(1)(a) of this Act (15 U.S.C. 1114) or section 110 of the Act
entitled ''An Act to incorporate the United States Olympic Association'',
approved September 21, 1950 (36 U.S.C. 380) with respect to a violation
that consists of using a counterfeit mark on or in connection with the
sale, offering for sale, or distribution of goods or services, the court may,
upon ex parte application, grant an order under subsection (a) of this section
pursuant to this subsection providing for the seizure of goods and counterfeit
marks involved in such violation and the means of making such marks, and
records documenting the manufacture, sale, or receipt of things involved in
such violation.

*****

(4) The court
shall not grant such an application unless--

(A) the person
obtaining an order under this subsection provides the security determined
adequate by the court for the payment of such damages as any person may be
entitled to recover as a result of a wrongful seizure or wrongful attempted
seizure under this subsection; and

(B) the court ﬁnds that it clearly appears from
speciﬁc facts that--

(i) an
order other than an ex parte seizure order is not adequate to achieve the
purposes of section 32 of this Act (15 U.S.C. 1114);

(ii) the applicant has not publicized the requested
seizure;

(iii) the applicant is likely to succeed in showing
that the person against whom seizure would be ordered used a counterfeit mark on
or in connection with the sale, offering for sale, or distribution of goods
or services;

*****

SEC. 39. (a) The district and territorial
courts to the United States shall have original jurisdiction, the circuit
courts of appeal of the United States (other than the United States Court of
Appeals for the Federal Circuit) and the United States Court of Appeals for the
District of Columbia shall have appellate jurisdiction, of all actions arising
under this Act, without regard to the amount of controversy or to diversity or
lack of diversity of the citizenship of the parties.

[SEC. 39a.] (b) No State or other jurisdiction
of the United States or any political subdivision or any agency thereof may
require alteration of a registered mark, or require that additional trademarks,
[servicemarks] service marks, trade names, or corporate names that may
be associated with or incorporated into the registered mark be displayed in the
mark in a manner differing from the display of such additional trademarks, [servicemarks]
service marks, trade names, or corporate names contemplated by

[32]

the
registered mark as exhibited in the certiﬁcate of registration issued by
the United States Patent and Trademark Ofﬁce.

*****

TITLE VIII----FALSE DESIGNATIONS OF ORIGIN AND FALSE
DESCRIPTIONS FORBIDDEN

SEC. 43. (a) Any person who shall afﬁx, apply,
or annex, or use in connection with any goods or services, or any container or
containers for goods, a false designation of origin, or any false description
or representation, including words or other symbols tending falsely to describe
or represent the same, and shall cause such goods or services to enter into
commerce, and any person who shall with knowledge of the falsely of such
designation of origin or description or representation cause or procure the
same to be transported or used in commerce or deliver the same to any carrier
to be transported or used, shall be liable to a civil action by any person
doing business in the locality falsely indicated as that of origin or the
region in which said locality is situated, or by any person, including a
consumer, who believes that he is or is likely to be damaged by the use of
any such false description or representation.

*****

TITLE IX----INTERNATIONAL CONVENTIONS

SEC. 44. (a) The Commissioner shall keep a register of
all marks communicated to him by the international bureaus provided for by the
conventions for the protection of industrial property, trademarks, trade and
commercial names, and the repression of unfair competition to which the United
States is or may become a party, and upon the payment of the fees

required
by such conventions and the fees herein prescribed may place the marks so
communicated upon such register. This register shall show a facsimile of the
mark or trade or commercial name; the name, citizenship, and address of the
registrant; the number, date, and place of the ﬁrst registration of the
mark, including the dates on which application for such registration was ﬁled
and granted and the term of such registration; a list of goods or services to
which the mark is applied as shown by the registration in the country of
origin, and such other data as may be useful concerning the mark. This register
shall be a continuation of the register provided in section 1 (a) of the Act of
March 19, 1920.

(b) Any person
whose country of origin is a party to any convention or treaty relating to
trademarks, trade or commercial names, or the repression of unfair competition,
to which the United States is also a party, or extends reciprocal rights to
nationals of the United States by law, shall be entitled to the beneﬁts
of this section under the conditions expressed herein to the extent necessary
to give effect to any provision of such convention, treaty or reciprocal law,
in addition to the rights to which any owner of a mark is otherwise entitled by
this Act.

(c) No
registration of a mark in the United
States by a person
described in [paragraph] subsection (b) of this section shall be granted
until such mark has been registered in the country of

[33]

origin of the
applicant, unless the applicant alleges use in commerce.

For the purposes
of this section, the country of origin of the applicant is the country in which
he has a bona ﬁde and effective industrial or commercial establishment,
or if he has not such an establishment the country in which he is domiciled, or
if he has not a domicle in any of the countries described in [paragraph] subsection
(b) of this section, the country of which he is a national.

(d) An
application for registration of a mark under sections [1, 2, 3, 4, or 23] section
1, 3, 4, 23, or 44(e) of this Act ﬁled by a person described in
[paragraph] subsection (b) of this section who has previously duly ﬁled
an application for registration of the same mark in one of the countries
described in [paragraph] subsection (b) shall be accorded the same force
and effect as would be accorded to the same application if ﬁled in the
United States on the same date on which the application was ﬁrst ﬁled
in such foreign country: Provided, That--

(1) the
application in the United
States if ﬁled
within 6 months from the date on which the application was ﬁrst ﬁled
in the foreign country;

(2) the
application conforms as nearly as practicable to the requirements of this Act,
[but use in commerce need not be alleged] including a statement that the
applicant has a bona ﬁde intention to use the mark in commerce;

(3) the rights
acquired by third parties before the date of the ﬁling of the ﬁrst
application in the [foreing] foreign country shall in no way be affected
by a registration obtained on an application ﬁled under this subsection
(d);

*****

(e) A mark duly
registered in the country of origin of the foreign applicant may be registered
on the principal register if eligible, otherwise on the supplemental register
herein provided. The application therefor shall be accompanied by a certiﬁcation
or a certiﬁed copy of the registration in the country of origin of the
applicant. The application must state the applicant's bona ﬁde
intention to use the mark in commerce, but use in commerce shall not be
required prior to registration.

(f) The
registration of a mark under the provisions of [paragraph] subsections (c),
(d), and (e) of this section by a person described in [paragraph] subsection
(b) shall be independent of the registration in the country of origin and
the duration, validity, or transfer in the United States of such registration
shall be governed by the provisions of the Act.

(g) Trade names
or commercial names of persons described in [paragraph] subsection (b)
of this section shall be protected without the obligation of ﬁling or
registration whether or not they form parts of marks.

(h) Any person
designated in [paragraph] subsection (b) of this section as entitled to
the beneﬁts and subject to the provisions of this Act shall be entitled
to effective protection against unfair competition, and the remedies provided
herein for infringement of

[34]

marks shall be
available so far as they may be appropriate in repressing acts of unfair
competition.

(i) Citizens or
residents of the United States shall have the same beneﬁts as are
granted by this section to persons described in [paragraph] subsection (b)
hereof.

TITLE X----CONSTRUCTION AND DEFINITIONS

SEC. 45. In the construction of this Act, unless the
contrary is plainly apparent from the context;

*****

[The term ''trademark'' includes any word, name,
symbol, or device or any combination thereof adopted and used by a manufacturer
or merchant to identify and distinguish his goods, including a unique product,
from those manufactured or sold by others and to indicate the source of the
goods, even if that source is unknown.] The term ''trademark'' includes any
word, name, symbol, or device or any combination thereof used by a person, or
which a person has a bona ﬁde intention to use in commerce and for which
such person applies for registration on the principal register established by
the Act, to identify and distinguish his or her goods, including a unique
product, form those manufactured or sold by others and to indicate the source
of the goods, even if that source is unknown.

[The term ''service mark'' means a mark used in the
sale or advertising of services to identify and distinguish the services of one
person, including a unique service, from the services of others and to indicate
the source of the services, even if that source is unknown. Titles, character
names and other distinctive features of radio or television programs may be
registered as service marks notwithstanding that they, or the programs, may
advertise the goods of the sponsor.] The term ''service mark'' means any
word, name, symbol, or device or any combination thereof used by a person, or
which a person has a bona ﬁde intention to use in commerce and for which
such person applies for registration on the principal register established by
this Act, to identify and distinguish the services of one person, including a
unique service, from the services of others and to indicate the source of the
services, even if that source is unknown. Titles, character names, and other
distinctive features of radio or television programs may be registered as
service marks notwithstanding that they, or the programs, may advertise the
goods of the sponsor.

[The term ''certiﬁcation mark'' means a mark
used upon or in connection with the products or services of one or more persons
other than the owner of the mark to certify regional or other origin, material,
made of manufacture, quality, accuracy or other characteristics of such goods
or services or that the work on labor on the goods or services was performed by
members of a union or other organization.] The term ''certiﬁcation
mark'' means any word, name, symbol, or device or any combination thereof used
by a person other than its owner, or for which there is a bona ﬁde
intention for such use in commerce through the ﬁling of an application
for registration on the principal register established by this Act, to certify
regional or other origin, material, mode of manufacture, quality, accuracy, or
other characteristics of such person's goods or

[35]

services
or that the work or labor on the goods or services was performed by members of
a union or other organization.

[The term ''collective mark'' means a trademark or
service mark used by the members of a cooperative, an association or other collective
group or organization and includes marks used to indicate membership in a
union, an association or other organization.] The term ''collective mark''
means a trademark or service mark used by the members of a cooperative, an
association, or other collective group or organization, or which such entity
has a bona ﬁde intention to use in commerce and for which it applies for
registration on the principal register established by this Act, and includes
marks indicating membership in a union, an association, or other organization.

[For the purposes of this Act a mark shall be deemed
to be used in commerce (a) on goods when it is placed in any manner on the
goods or their containers or the displays associated therewith or on the tags
or label aﬁxed thereto and the goods are sold or transported in commerce
and (b) on services when it is used or displayed in the sale or advertising of
services and the services are rendered in commerce, or the services are
rendered in more than one State or in this and a foreign country and the person
rendering the services is engaged in commerce in connection therewith.

[A mark shall be deemed to be ''abandoned''--

[(a)
When its use has been discontinued with intent not to resume. Intent not to
resume may be inferred from

circumstances. Non----use for two consecutive years
shall be prima facie abandonment.

[(b) When any course of conduct of the registrant,
including acts of omission as well as commission, causes the mark to lose its signiﬁcance
as an indication of origin. Purchaser motivation shall not be a test for
determining abandonment under this subparagraph.]

The
term ''use in commerce'' means the bona ﬁde use of a mark in the
ordinary course of trade, and not made merely to reserve a right in a mark. For
purposes of this Act, a mark shall be deemed to be in use in commerce--

(1) on goods
when--

(A) it is
placed in any manner on the goods or their containers or the displays
associated therewith or on the tags or labels afﬁxed thereto, and

(B) the goods
are sold or transported in commerce, and

(2) on
services when it is used or displayed in the sale or advertising of services
and the services are rendered in commerce, or the services are rendered in more
than one State or in the United States and a foreign country and the person
rendering the services is engaged in commerce in connection therewith.

A mark shall be deemed to be ''abandoned''--

(1) when its
use has been discontinued with intent not to resume. Intent not to resume may
be inferred from circumstances. Nonuse for two consecutive years shall be prima
facie evidence of abandonment. ''Use'' means use made in the ordinary course of
trade and not made merely to reserve a right in a mark; or

[36]

(2) when any
course of conduct of the owner, including acts of omission as well as
commission, causes the mark to become the generic name for the goods or
services or otherwise to lose its signiﬁcance as a mark. Purchaser
motivation shall not be a test for determining abandonment under this paragraph.

*****

SEC.
51 All certiﬁcates of registration based upon applications for
registration pending in the Patent and Trademark Ofﬁce on the effective
date of the Trademark Law Revision Act of 1988 shall remain in force for a
period of 10 years.

[The following material
is excerpted from the Congressional Record (Daily Ed.) for October 19, 1988,
beginning at page H10411]

[House
Debate on Trademark Law Revision Act of 1988]

(October 19, 1988)

Mr. KASTENMEIER. Mr. Speaker, I move to suspend the
rules and pass the Senate bill (S. 1883) to amend the Trademark Act of 1946 to
make certain revisions relating to the registration of trademarks, and for
other purposes, as amended.

The Clerk read as follows:

FOOTNOTES:

(n1) Footnote 1. H.R. 5372 does not change current law
or practice regarding parallel imports, which are sometimes known as grey
market goods.

(n6) Footnote 6. Testimony of Ronald Kareken, Hearings
on H.R. 4156, the Trademark Law Revision Act of 1988, before the Subcommittee
on Courts, Civil Liberties and the Administration of Justice of the House
Committee on the Judiciary, September 8, 1988.

Honorable Peter W. Rodino,
Chairman. House Committee on the Judiciary, September 23, 1988, with attached
letter from Mr. Carpenter to the Honorable Robert W. Kastenmeier, Chairman,
Subcommittee on Courts, Civil Liberties and the Administration of Justice of
the House Committee on the Judiciary, September 21, 1988; letter from Daniel
Oliver, Chairman, Federal Trade Commission, to the Honorable Peter W. Rodino,
September 15, 1988; letter from Nicholas Veliotes, President, Association of
American Publishers, to the Honorable Robert W. Kastenmeier, September 20,
1988; letter from Robert J. Brinkmann, General Counsel, National Newspaper
Association, to the Honorable Robert W. Kastenmeier, September 19, 1988; letter
from Douglas J. Bennet, President, National Public Radio, to the Honorable
Robert W. Kastenmeier, September 21, 1988; letter from Bruce W. Sanford. Esq.,
on behalf of the Society of Professional Journalists, to the Honorable Robert
W. Kastenmeier, September 20, 1988, with attached letter to the Honorable Peter
W. Rodino; letter from Edward O. Fritts, President and CEO, National
Association of Broadcasters, to the Honorable Robert

(n8) Footnote 8. Letter from Bruce W. Sanford, Esq.,
on behalf of the Society of Professional Journalists, to the Honorable Robert
W. Kastenmeier, Chairman, Subcommittee on Courts, Civil Liberties and the
Administration of Justice of the House Committee on the Judiciary, September
20, 1988.

(n9) Footnote 9. Letter from Douglas J. Bennet,
President, National Public Radio, to the Honorable Robert W. Kastenmeier,
Chairman, Subcommittee on Courts, Civil Liberties and the Administration of
Justice of the House Committee on the Judiciary, September 20, 1988.

(n10) Footnote 10. Letter from Edward O. Fritts,
President and CEO, National Association of Broadcasters, to the Honorable
Robert W. Kastenmeier. Chairman, Subcommittee on Courts, Civil Liberties and
the Administration of Justice of the House Committee on the Judiciary,
September 8, 1988.

(n11) Footnote 11. Letter from Robert J. Brinkmann,
General Counsel, National Newspaper Association, to the Honorable Robert W. Kastenmeier,
Chairman, Subcommittee on Courts, Civil Liberties and the Administration of
Justice of the House Committee on the Judiciary, September 19, 1988.

(n15) Footnote 15. Statement of Ronald Kareken,
Hearings on H.R. 4156, the Trademark Law Revision Act of 1988 before the
Subcommittee on Courts, Civil Liberties and the Administration of Justice of
the House Committee on the Judiciary, September 8, 1988.

(n22) Footnote 22. Statement of Bruce Silverglade,
Legal Director, Center for Science in the Public Interest, Hearings on
H.R.4156, the Trademark Law Revision Act of 1988, before the Subcommittee on
Courts, Civil Liberties and the Administration of Justice of the House
Committee on the Judiciary, September 8, 1988.

(n24) Footnote 24. Thorn v. Reliance Van Co., Inc.,
736 F.2d 929.832 (3rd Cir. 1984). The plaintiff in Thorn was not a
consumer, but rather an investor in a business allegedly harmed by the
defendant's conduct; the Third Circuit therefore had no difﬁculty ﬁnding
that the plaintiff had standing.